Ex Parte Bittar et alDownload PDFPatent Trials and Appeals BoardMay 20, 201914741022 - (D) (P.T.A.B. May. 20, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/741,022 06/16/2015 131203 7590 05/22/2019 Halliburton c/o McGuire Woods LLP 1750 Tysons Boulevard Suite 1800 Tysons, VA 22102-4215 FIRST NAMED INVENTOR Michael S. Bittar UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 2069464-0104NlUS 6244 EXAMINER GAY, JENNIFER HAWKINS ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 05/22/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patents@mcguirewoods.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAELS. BITTAR, VADIM MINOSYAN, and GARYE. WEAVER Appeal2017-008989 Application 14/7 41,022 1 Technology Center 3600 Before ANTON W. PETTING, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellants identify "Halliburton Energy Services, Inc." as the real party in interest. Appeal Br. 3. Appeal2017-008989 Application 14/7 41,022 According to Appellants, their invention is directed to methods for measuring, as well as apparatuses that measure, "a resistivity of a formation" (Specification, Abstract) while drilling a borehole (id. ,r 3). Claims 1, 10, and 16 are the independent claims on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. A system for measuring a resistivity of a formation compnsmg: an instrumented drill bit coupled to a bottom end of a bottom hole assembly; at least one first electromagnetic wave antenna located in the bottom hole assembly to transmit an electromagnetic wave signal into the formation; at least one second electromagnetic wave antenna located on the instrumented drill bit and longitudinally spaced apart from the at least one first electromagnetic wave antenna to receive the electromagnetic wave signal transmitted through the formation; and electronic circuits operably coupled to the at least one second electromagnetic wave antenna to process the received signal to determine a resistivity of the formation proximate the instrumented drill bit; wherein the at least one second electromagnetic wave antenna comprises a plurality of coil receivers mounted circumferentially around the instrumented drill bit to detect a radial resistivity of the formation at the instrumented drill bit. REJECTION AND PRIOR ART The Examiner rejects claims 1-20 under 35 U.S.C. § I03(a) as unpatentable over Bittar (US 2008/0078580 Al, pub. Apr. 3, 2008) and Dailey et al. (US 5,160,925, iss. Nov. 3, 1992) (hereinafter "Dailey"). 2 Appeal2017-008989 Application 14/7 41,022 ANALYSIS As set forth above, independent claim 1 recites, in relevant part, at least one second electromagnetic wave antenna located on the instrumented drill bit and longitudinally spaced apart from the at least one first electromagnetic wave antenna to receive the electromagnetic wave signal transmitted through the formation, ... wherein the at least one second electromagnetic wave antenna comprises a plurality of coil receivers mounted circuniferentially around the instrumented drill bit to detect a radial resistivity of the formation at the instrumented drill bit. Appeal Br., Claims App. ( emphases added). In support of claim 1 's rejection, the Examiner finds that any of Bittar's receiver antennas 112, 114, and 116 disclose the claimed "second electromagnetic wave antenna," and Bittar's drill bit 14, downhole sensor 26, and telemetry transmitter 28 together disclose the claimed "instrumented drill bit." Final Action 4; Answer 8. Appellants argue that the Examiner errs because none of Bittar's receiver antennas 112, 114, and 116 are located on drill bit 14, which is what claim 1 requires. Appeal Br. 13. In response, the Examiner finds that although Bittar' s receiver antennas are located on downhole sensor 26 and not on drill bit 14 (Answer 8), "the Examiner can include more than just the body of [Bittar's] drill bit [14] in defining [the claimed] drill bit" (id. at 6). Alternatively, the Examiner concludes that it would have been obvious to relocate Bittar' s antennas onto Bittar's drill bit body. Id. at 9. Based on our review, for the following reasons, we do not sustain the Examiner's rejection. We recognize that claim 1 recites a "drill bit" rather than drill bit body. Further, Appellants' Specification does not use the claim term "instrumented drill bit," but instead refers to an "instrumented drill bit 3 Appeal2017-008989 Application 14/7 41,022 assembly 1 O" as well as a "drill bit 5." See, e.g., Spec. ,r,r 25, 66 ( emphasis added). According to Appellants' Specification, instrumented drill bit assembly 10 includes bit sub 16 as well as drill bit 5. See, e.g., id. ,r 25. We note that Appellants illustrate and describe various coil receivers (e.g., coil receivers 20, 22, 322, 520, and 522) clearly located in or on drill bit 5. See, e.g., Figs. 2, 3A, 5; see, e.g., Spec. ,r,r 25, 31, 32, 38. We further note that Appellants also illustrate and describe certain coil transmitters and receivers (e.g., coils 15,420,422, and 515) that are not located in or on drill bits, but which instead are located in bit subs. See, e.g., Figs. 2, 3A, 5; see, e.g., Spec. ,r,r 25, 33, 38. However, as the cited portions of the Specification set forth, Appellants generally describe these coils as located or mounted in the bit sub, and the bit sub as attached or mounted to drill bit 5, and do not describe these coils as located on or in the drill bit. Still further, Appellants use the term "drill bit" to refer only to the bit itself and not to structure attached to the bit, which is consistent with the ways in which Bittar and Dailey use the term. For example, as discussed above, Bittar shows drill bit 14 connected to, and, thus, separate from, downhole sensor 26 and telemetry sensor 28. Bittar Fig. 1. Dailey shows and describes "extended sub 200 connected to ... drill bit 50." Dailey col. 8, 11. 62-32 (emphases omitted), Figure 3. Thus, based on our review of the record as a whole, including Appellants' Specification and figures, the broadest, reasonable interpretation of the claim term "instrumented drill bit" refers to a drill bit, rather than an assembly that includes a drill bit, and not to structure that connects to the drill bit, such as a bit sub or downhole sensor. For these reasons, we do not agree with the Examiner that because Bittar discloses receiver antennas 4 Appeal2017-008989 Application 14/7 41,022 located on downhole sensor 26 connected to drill bit 14 (i.e., antennas located on a drill bit assembly), Bittar teaches "at least one second electromagnetic wave antenna located on the instrumented drill bit," as claimed. 2 As set forth above, the Examiner determines the following alternate basis for the rejection: Assuming arguendo that it is not agreed that the drill bit assembly of Bittar corresponds to the claimed bit, the Examiner would like to further note that the exact location of the first and second electromagnetic antenna with respect to each other does not[,] nor would it[,] change the overall functionality of the system. In other words, one of ordinary skill in the art would recognize that the placement of the second electromagnetic antenna on the bit body itself opposed to on the bit assembly would not change how the second electromagnetic antenna interacted with the first antenna. Further Appellant[ s] ha[ ve] not provided any criticality for locating the second antenna on the bit body itself opposed to on the bit assembly. Without such criticality[,] it cannot be shown that one of ordinary skill in the art would not be able to simply rearrange the position of the antenna along the system in general to suit particular downhole conditions and desired operating parameters. Answer 8-9. This is not sufficient to establish that it would have been obvious to relocate antennas from Bittar's downhole sensor 26 to drill bit 14. Notwithstanding that Appellants argue that "paragraph 3 of the ... Specification ... includes a description of the criticality of measuring the resistivity of the formation 'as close to the bit as possible"' (Reply Br. 8-9 2 In the Response to Arguments section of the Answer, for the first time, the Examiner appears alternatively to rely on Dailey to disclose an "antenna located on the drill bit assembly." Answer 9. To the extent that this would provide an alternate basis for the rejection, we would not sustain such a rejection for the reasons we do not sustain claim 1 's rejection based on Bittar's disclosure of receivers on a drill bit assembly, as discussed supra. 5 Appeal2017-008989 Application 14/7 41,022 ( citing Spec. ,r 3) ), the Examiner's determination does not set forth any affirmative reason why one of ordinary skill would have relocated Bittar's receiver antennas 112, 114, and 116 as the Examiner proposes. Thus, based on the foregoing, we do not sustain claim 1 's obviousness rejection. For similar reasons, we do not sustain the Examiner's rejection of independent claims 10 and 16, each of which includes a similar recitation. We also do not sustain the obviousness rejection of claims 2-9, 11-15, and 17-20 that depend from these independent claims. DECISION We REVERSE the Examiner's obviousness rejection of claims 1-20. REVERSED 6 Copy with citationCopy as parenthetical citation